Chris Baxter

7 Patent Cost Hacks

REGISTRABLE IP RIGHTS

Patents Trademarks Designs

NON-REGISTRABLE IP RIGHTS

• Copyright

• Trade secrets & know-how

WHAT IS THE LEGAL EFFECT OF A PATENT?

A 20 year commercial monopoly over an idea in the country the

patent is filed.

WHY DO PATENTS EXIST?

(1) To encourage the sharing of technical ideas in society

(2) To incentivise R&D and innovation

[Hegs video on youtube]

HOW MUCH IS IP WORTH?

MOST VALUABLE TRADEMARK?

• What brand?

• How much is it worth?

MOST VALUABLE PATENT?

• What type of technology?

• How much was it worth?

MOST VALUABLE TRADEMARK

• What brand? APPLE

• How much is it worth? $145.3B

MOST VALUABLE PATENT

• What type of technology? LIPITOR (A CHOLESTEROL-LOWERING

PHARMCEUTICAL USED TO HELP REDUCE HEART ATTACK AND

STROKE RISK)

• How much was it worth? $105B OVER 20 YEAR LIFESPAN OF

PATENT

WHAT FIELDS CAN YOU PATENT IN?

Software & mobile

apps

Electrical engineering

Chemistry, biotech &

pharmaceuticals

Mechanical engineering

WHAT FIELDS CAN YOU PATENT IN?

Consumer products Civil engineering &

construction

Medical devices Physics & optical

engineering

WHAT CAN YOU PATENT?

An idea that is:

1. Patentable subject matter

2. New

3. Comprises an inventive step

2 & 3 are with reference to the prior art.

PATENTING SOFTWARE

• You can’t patent business ideas implemented by standard software only in

most countries anymore – USA is an exception.

• Generally, patent offices require an idea to have a “technical effect” in order

to be patentable, such as:– Technical engineering improvement

• Using less memory to store data

• Reducing bandwidth

• Transmitting data more efficiently

• Making less calls on a server

• Accelerating computational time

• Improving image processing (Research Corporation Technologies Inc. v. Microsoft Corp.)

• Increasing the range of a GPS device with a mathematical model (SiRF Technology v. International Trade

Commission)

– Ideas rooted in a technological environment

• Removing malicious code from an email

• A web page providing users with a composite web page containing product-related elements of a third party and

visually perceptible elements of a host page, rather than redirecting the user to a third party page (DDR v.

Hotels.com). This solves the business challenge of retaining website visitors, a problem unique to the Internet –

i.e. there is no pen and paper or brick and mortar equivalent

WHAT DOES A PATENT LOOK LIKE?

1. Background – describe the prior art

2. Description – describe all the different ways your invention could be made / implemented including the best way!

3. Claims – define the scope of legal monopoly

4. Drawings

MAGIC 8-BALL EXAMPLE

Claim 1

In a liquid filled die agitator the combination of a closed chamber having a side wall, an end wall and an opposed transparent end wall forming a window for the chamber, an opaque liquid filling the chamber, a substantially round, buoyant die member made of a plastic material immersed in the liquid, said die member having a plurality of marginally inter-connected flat facets on the exterior thereof, and a set of raised indicia molded on and projecting a uniform distance from each facet, the overall color of the die member contrasting with the color of the opaque liquid, whereby in operative die position, the uppermost surfaces of a set of indicia on one facet will engage the inside face of the window and the upper surface of said facet will be maintained in spaced relation to said inside face of the Window by the set of indicia.

Patent Cost Hack #1

Search your idea on Google patents. If your idea is not new then you

won’t be able to get a patent anyway.

https://patents.google.com/

Google Patents covers the entire collection of granted patents and

published patent applications from the USPTO, EPO, and WIPO. US

patent documents date back to 1790, EPO and WIPO to 1978.

http://pericles.ipaustralia.gov.au/ols/auspat/ - Australia

https://patentscope.wipo.int/search/en/search.jsf - PCT

https://worldwide.espacenet.com/ - Europe

http://www.uspto.gov/patents-application-process/search-patents - USA

Patent Cost Hack #2

Provide your patent attorney with a complete briefing to show them that you will be an easy type of client to work with (i.e. knowledgeable & systematic in your approach) and you will probably get a better quote for your filing – Address the following:

1. What problem does your invention seek to solve?

2. How has this problem been addressed in the past?

3. What is your solution to the problem? How does your invention work?

4. Provide illustrations as follows:a) Drawings, if your invention is a device (rough sketches are fine)

b) Flowcharts, if your invention relates to software and block diagrams showing how the various software modules fit together.

5. A list of the commercial advantages and user benefits of your invention

6. Are there any possible variations in functionality, structure or materials to your invention that you can envisage?

7. Are there applications for your invention in other industries?

8. Are you the only inventor? If not, what are the full names, addresses and contact details of the other inventors?

9. Is this application to be owned by a company or by you personally?

10. Where do you believe will be the most important markets for your idea at the present time?

Patent Cost Hack #3

Search again after you have filed your provisional patent application.

• The most cost effective way to do this is with IP Australia’s International-

Type Search service (Government Fee is $2200)

• They will search all patent databases worldwide and use much more

sophisticated techniques than keyword searching

• In our experience, they find all relevant documents about 50% of the

time

WHAT IS THE PATENTING PROCESS?

Patent Cost Hack #4

File a PCT international patent application after your provisional 12

month period expires.

• Pushes back the costs of filing a patent in each country of interest by

another 18 months

• Secures your priority date in 148 countries (only notable exceptions

being Taiwan & Argentina)

• Examination process handled centrally before your application

branches out

• If you can achieve a clear ISR, IPE or IPRP – attractive to investors

Patent Cost Hack #5

Align your IP strategy with your business goals

• What’s the size of the market in Country X, what revenue do you expect

to derive?

• Only file in those countries that are a significantly sized market.

• Will the cost of patenting in a particular country (e.g. $20k) outweigh the

value of protecting the higher profit margins of the patented product

over a 20 year period?

POPULATION, GDP & PATENT COSTS

Patent Cost Hack #6

Use the Global Patent Prosecution Highway Process

• Established Jan 2014

• Achieve grant in 1 country and many others will enjoy an expedited

exam process

Austrian Patent Office (APO)

Canadian Intellectual Property Office

(CIPO)

Danish Patent and Trademark Office

(DKPTO)

Estonian Patent Office (EPA)

German Patent and Trade Mark Office

(DPMA)

National Board of Patents and Registration

of Finland (NBPR)

Hungarian Intellectual Property Office

(HIPO)

Icelandic Patent Office (IPO)

Intellectual Property Office of Singapore

(IPOS)

Israel Patent Office (ILPO)

Japan Patent Office (JPO)

Korean Intellectual Property Office (KIPO)

Nordic Patent Institute (NPI)

Norwegian Industrial Property Office

(NIPO)

Portuguese Institute of Industrial Property

(INPI)

Russian Federal Service for Intellectual

Property (ROSPATENT)

Spanish Patent and Trademark Office

(SPTO)

Swedish Patent and Registration Office

(PRV)

United Kingdom Intellectual Property

Office (UKIPO)

United States Patent and Trademark

Office (USPTO)

Patent Cost Hack #7

Save money by making money

• You may be able to achieve additional revenue by licensing your IP

• E.g. If you are only operating in AU & US but have an international

priority date that will allow filing in other countries at a later stage, then

you might want to consider licensing your IP in other countries.

• Revenue streams from licensing (e.g. royalties) may offset or

completely cover all of your IP costs.

What is a patent attorney?

• Qualifications

– Technical

– Legal

• Is a patent attorney a lawyer in Australia?

• Why it’s the best job in the world

Entrepreneurs create value; they are not risk

takers per se but opportunity seekers.

Innovation is not creativity but requires it.

Innovation only occurs when the concept is

anointed by the marketplace.

Peter Farrell

You miss 100% of the shots you don't take.

Wayne Gretzky

THANK YOU

Any questions?